Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Wednesday, 31 August 2011

Having drawn the attention of readers to the PressTV production on the police, the press and phone hacking on Monday here, the Kat can also recommend that they take a look at Four Corners' "Bad News", here on ABC (that's the Australian Broadcasting Corporation), which the IPKat's friend Mary-Ellen Field (Brand Licensing) describes as "definitive".

Another friend of the IPKat, copyright scholar and musicologist Andreas Rahmatian (University of Glasgow), sent him " Intellectual Property and the Concept of Dematerialised Property" earlier this year, this being a chapter of a book, Modern Studies in Property Law, edited by Susan Bright andpublished by Hart Publishing (you can get details of this book here). The IPKat is pleased to say that Andreas has placed this chapter on SSRN here, to enhance access to it. Having read it, the IPKat warns readers that this is a piece of genuine legal theory and not a how-to-do-it piece for practitioners. It is also a piece that does not pander to the prejudices of Anglo-Saxons or purveyors of Hohfeldian analysis of jural relations. In fact, if you think you know what reality is, read this article and prepare to be challenged!

Around the weblogs. The 37th in the long-running soap opera that is PatLit's PCC Pages series assesses whether IPOff has complied with the judge's order to disclose documents to the claimant Cautious Co, here. If you never knew about the US termination right, a post by the 1709 Blog's Aurelia J. Schultz will help you. Tomorrow (Thursday 1 September) is National No Music Day in Nigeria, as Kingsley Egbuonu reports on Afro IP. Over in India, a guest post from Tania Sarcar relates how poor old John Doe is at the receiving end of yet another court order, this time for illegally broadcasting or streaming 'The Bodyguard'.

What the naughty Kat found. Tidying his office, this Kat found a couple of very worthy intellectual property books that were published last year and which he should have reviewed when they first arrived. While it's a bit late to review them now, he can at least draw them to the attention of his readers and confirm that there's plenty in them for the discerning IP practitioner, student or enthusiast. They are

European Trademark Law: Community Trademark Law and Harmonized National Trademark Law under the powerful triple-authorship of Tobias Cohen Jehoram, Constant van Nispen and Tony Huydecoper. This is a confident, authoritative explanation of law which will throw the English reader into a panic since, while the book is written in English and the title refers to "harmonized national trademark law", it's not about the English experience of trade marks in Europe at all. The authors are (despite the quality of their English) Dutch and the text is written from a Dutch perspective. Thus the introduction is followed, not by a review of Euro-generalisations, but by a description of the statutory basis for Benelux law. The Belgians shouldn't think that this is all about their legal heritage though: in the table of jurisprudence, Belgian cases are listed under 'Foreign Courts'. The book's web page is here.

Trademarks and Unfair Competition (8th edition), by David C. Hilliard, Joseph Nye Welch II and Uli Widmaier. This is a whopper of a case book, which has a high-risk rupture factor (the publishers gave up numbering the pages after they got to 990). Each edition of this much-loved collection gets a bit more daring than its predecessor: this one has a fresh new chapter on that awkward interface between freedom of speech and those "terrible twins", trade marks and unfair competition, together with some timely and helpful material on the rights of foreign trade mark owners in the US and the extraterritorial jurisdiction of the US courts. Internet and e-lawyers will be pleased with coverage of Federal Trade Commission and Food and Drug Administration developments addressing deceptive advertising and online marketing schemes. The book's website is here.

ODFAG (the Online Design Filing
Action Group) is now sealing
up letter-boxes in order to prevent
postal filings ...

Spurred by the IPKat's earlier post ("Lost in the post", here) in which a correspondent asks why you can't file UK registered design applications online, Class 99 launched a little poll as to whether people think this is a good idea. Admittedly the sample may be biased in that only respondents who use the internet and emails are ever likely to know about it, but the latest news from Class 99's cosy corner of the blogosphere is that, with five days left to vote, 100% of respondents think online filing is a good idea. Two comments on the original Katpost are worthy of note. First, Peter Smith reminded us that the UK's user-friendly and helpful Intellectual Property Office (IPO) publishes details of customer feedback on its website. In a reply given in the final quarter of 2010 the IPO dealt with one such nugget of customer feedback as follows:

You said "I wonder if you are planning to expand your online filing service to include the filing of registered design applications. It seems presently, if you do not reside near London or Newport, then you must fax file (hoping the drawings are reproduced sufficiently) or file by post which effectively loses a day from the filing date. Please also confirm whether I can file patent formal drawings online using the subsequently filed documents form."

We replied, Thank you for your email of 14 October which has been passed to me on the designs examination team. Please accept my apologies for the delay in responding. At present we do not offer any form of electronic filing for designs other than fax filing, as you acknowledge. However, we are in the process of upgrading our trade marks systems and on completion of this, although we do not yet have definite plans in place, it is possible that our designs systems may be reviewed in the same way."

An anonymous but helpful soul from the IPO added this:

"The IPO is committed to providing the best e-services to users. Whilst the recent focus has been on trade marks, work is underway to consider the options for updating and improving the systems that support UK design registration, including the introduction of an e-filing service. Views on the shape of the system will form part of a wider consultation on the registration and protection of designs to be launched later this year".

The IPKat hadn't realised that a wider consultation on the registration and protection of designs was quite so imminent, what with there being only 116 shopping days to Christmas and all that, and he pledges to do all he can to maximise awareness of this consultation within the IP communities.

The final comment comes from the Kat's old friend Keith Hodkinson (Marks & Clerk) who, in his inimitable manner, takes issue with the options offered by the Class 99 poll [Essentially, to the question "should there be online design registration?", the choice was between (i) yes, (ii) it doesn't matter, (iii) no]. Says Keith:

"Again, the obvious alternative is missing! Don't spend all that money on inventing yet another bespoke online filing system with its own quirks and idiosyncracies -- get the UK to join Hague and then file online via WIPO".

Readers who were wondering about the word "Again" might like a little explanation. This refers to the IPKat's poll [which still has eight days to run] on what to do about those annoying unpaid costs orders in Community trade mark opposition proceedings. The range of six options, which the IPKat thought quite generous, did not include Keith's brilliant if somewhat nuclear suggestion of scrapping costs orders entirely.

Tuesday, 30 August 2011

A Practical Guide to Working with TRIPS, by Antony Taubman, reminds the IPKat a little bit of the position that the ancient Greek mythological figure and blind seer Tiresias. Having spent time both as a man and as a woman, he was asked by Greek gods Zeus and Hera which of the two derived more pleasure from a particular pastime which it it lies beyond the realm of merely fictional cats to discuss. Tactlessly deciding that Zeus was right to say that it was the female of the species who had more fun, he was struck blind by Hera by way of punishment. Now, Antony is in an analogous position, having worked for both the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO), to say which has the more control over the destiny of intellectual property rights as embodied in TRIPS. What is his answer? Which is the more fun? Readers will have to read this book and decide for themselves.

Oxford University Press, which have had the good fortune to publish this handy little work (handy because it is easily handled, little because all the publishable practical guidance in the world can't add up to a whole lot more than the author reveals here), says this:

"This book is a concise and accessible guide to the practical workings of the TRIPS agreement ... for policymakers and their legal advisers. The book offers a unique insider's account of how the international rules of IP function in practice within a broader legal framework that consists of WTO law and dispute resolution procedures. It clarifies how IP law and trade law must be dealt with in a coherent and sustainable manner, and provides practical guidance on how to read public policy objectives into the formulation and application of IP laws and related regulation, within the legal framework established by TRIPS. The book is concise and clear, and cuts through the textual clutter and complexity that afflicts policymaking and negotiation under the TRIPS regime.

Readership: Policymakers in government, and their legal advisers, international organizations, civil society, industry, academia, government officials, trade negotiators, and legal practitioners operating in the international intellectual property field would all be interested in this book".

This blogger has been trying to interest legal practitioners in TRIPS for the past 15 years or so, with conspicuously little success, and wouldn't want to think that his pension fund somehow depended on the number of practitioners that would be running off (or clicking on) to their favourite bookshop to buy this book. However,judging by the number of academics in post and students writing their theses and dissertations who have chosen TRIPS as at least part of their subject, there should be no shortage of customers for it. One point to note: European readers will know that TRIPS has developed a body of case law and accompanying commentary of its own within the European Union, where the extent to which TRIPS is part of EU law, is enforceable in European courts and so on. That subset of TRIPS-related activity lies outside the scope of this book and, in the opinion of this blogger, awaits a little book of its own.

Landmark Intellectual Property Cases and Their Legacy, edited by Christopher Heath and Anselm Kamperman Sanders, is an offering from Wolters Kluwer which scoops the content of one of the Institute of European Studies of Macau (IEEM) international IP conferences. The publisher explains what this book's theme is all abou:

"This is a book dedicated to the significance and legacy of landmark cases in the field of intellectual property. Eleven well-known scholars offer in-depth commentary and analysis of cases that have made an impact on legal theory or critical thinking about the scope and purpose of the protection of intellectual and industrial creativity. All the cases covered have proven useful in developing doctrine, even though subsequent developments have made some appear ‘misleading’ rather than ‘leading’, and for some recent cases it is too early to say whether their approach will become mainstream. ...

The book concludes with an analysis of two case clusters remarkable for the worldwide dimension of the dispute. The authors show how litigation over Lego in about 30 jurisdictions and Budweiser in over 40 jurisdictions has enriched doctrine on such issues as contract, trade marks, trade names, geographical indications, property rights in general, human rights, and various international and bilateral treaties, all as they impinge on the protection of intellectual property rights. For scholars in the field, as well as for lawyers seeking a rich vein of doctrine to buttress a case, this unusual book will be of incomparable value. As a masterful clarification of salient doctrine, it represents a major contribution to the legal theory underpinning intellectual property law".

Some books which are compilations of works of individual scholars are described as publications in which the whole is greater than the sum of its parts. This book, I feel, is rather the other way round -- it is a little less than the sum of its parts.In the first place, I would personally have enjoyed a longer, more reasoned Preface than the very short (less than two sides) offering placed before readers, seeking to justify their "greatest hits" theme more rigorously, discussing some of the interesting issues of methodology that arise in the definition and selection of landmark cases and contrasting the validity of the concept in common law jurisdictions in precedent is binding, or at least highly influential, and those where it is said to be of less import. Secondly, since a not insubstantial quantity of case law is referred to in some of the chapters, a table of cases would have been appreciated. Thirdly, I would have liked a clearer explanation of what Peter Yu's (excellent) chapter on Moral Rights 2.0 was doing in this collection, since it analyses a subject, not a landmark case, and the single sentence with which it opens is insufficient in my opinion to link it to the theme of the rest of the book: it's a bit like opening a jar of pickled herring and finding, in its midst, a chocolate truffle.

This apart, the book is an enjoyable read -- particularly the reviews of the global Lego and Budweiser litigation, which make one tremble to imagine what might have happened if the Danish brickmaker had ever picked a legal fight with Anheuser-Busch. Most of the cases are landmarks in the light of what happened after them, though in the case of eBay v MerceXchange this review remains convinced that its landmark status was conferred by what happened before the decision, like a hurricane that builds up its momentum, instills massive fear and then misses its supposed victims.

Intellectual Property And Biotechnology, edited by Arti K. Rai (Elvin R. Latty Professor of Law, Duke Law School, Durham, US), is the latest in Edward Elgar Publishing's series of Critical Concepts in Intellectual Property Law.It's a difficult book to review in the round, like any compilation of previously published articles which were not based on the same theme or premise (cf the 'landmark cases' theme of the book reviewed above), where there is a broad spread of time between the earliest and latest studies.

According to the publishers:

"In this timely volume Professor Arti Rai brings together a wide range of articles that reveal the important role of intellectual property law in the formation and development of the dynamic and economically significant biotechnology industry.

The collection encompasses theoretical articles that present principles of patent economics important to the industry, articles that discuss the patent law doctrines most relevant to biotechnology and empirical studies on the ‘real world’ effects of patents and secrecy. These are resonant issues in an ever-expanding field, and will establish this book as an essential reference point for lawyers, researchers and students".

This is all true. It is a worthy collection which matches its description. There should however be a little notice somewhere to the effect that its contents are essentially United States-derived and United States-oriented. Without it, one might be forgiven for thinking that European scholarship and endeavour, whether in law, economics or biotechnology itself, is non-existent.

Monday, 29 August 2011

For international travellers coming from the U.S., you will usually find yourself in one of the many Hudson News stores doting our nation's airports pacing the magazine rack for a selection of entertaining flight-fillers. The AmeriKat's favorite staples that are crammed into her already overstuffed Coach carryall, are The Economist, US Weekly (so bad, its good), National Geographic, Psychology Today, Rolling Stoneand, front-seat pocket favorites - Time and Newsweek. These are usually the first magazines the AmeriKat starts devouring even before take-off and by the time the plane is taxing to the runway, she has made it to her favorite page - the page with that week's news expressed in numbers. Sadly the AmeriKat is busily stranded in London so the joy of airplane literature have escaped her this summer, but in a tribute to her favorite travel reading she has taken a glossy page out of US news magazines and has put this week's US IP news in figures. (picture, left - the AmeriKat snuggling under her airplane reading)

When IP news is a f(x) of n.....

8,000,000 - The number of patents issued by the USPTO on 16 August 2011 when it granted a patent to Second Sight Medical Products for a product called Argus II - a visual prosthesis apparatus that enhances visual perception for people who have become blind due to outer retinal degeneration. Argus II uses electrical retina stimulation to produce the visual perception of patterns of light. The Argus II is starting its clinical trials in the US and has obtained marketing approval in Europe. President and CEO of Second Sight, Robert Greenberg, stated that "This patent protection and significant federal support for innovation have already played key roles in creating nearly 100 US jobs at our company. Once the Argus II has FDA approval in the United States, we expect to create hundreds of more jobs over the next several years..." IP innovation and protection = economic stimulus, is plainly the message from the USPTO.

75 years- the number of years that it took the USPTO to reach 1 million granted patents in August 1911 when it issued to Francis H. Holton of Akron, Ohio a patent for his improvement in vehicle tires to make them more durable and puncture resistant.

6 years- the number of years that it took the USPTO to go from 7 million patents granted to 8 million patents. The 7 millionth patent was issued to John P. O'Brien for a strong, biodegradable polysaccharide fibers he invented for use in textile applications.

1 - The number of Abercrombie & Fitch articles of clothing the AmeriKat owns - which is far less than the cast of Jersey Shore. IPKat readers may have caught a glance at last week's story that frat-boy favorite apparel retailer, Abercrombie & Fitch, was reported to have offered to pay Michael "The Situation" Sorrentino of MTV reality show Jersey Shore to never where its clothes on air (see A&F press release here) as the "association is contrary to the aspirational nature of our brand, and may be distressing to many of our fans." Many are calling the press release a publicity stunt for a "slow day in August" right before the back-to-school buying begins. However, its interesting to note that a press release about an allegedly detrimental impact on brand reputation was created to increase just that - brand reputation....ahhh, the fickle world of brands!

$3,340 - The cost of the genetic test for breast cancer risk that was subject of Myriad Genetic's recent success in the US Court of Appeals for the Federal Circuit when the court upheld the company's patents on two human genes - BRCA1 and BRCA2 (picture, right - pink ribbon, (c) Science 2002). Thesequencing of the genes tests for mutations that increase the risk of a woman getting breast and ovarian cancer. A recent New York Times article reports that despite its recent legal success some commentators are suggesting that the test has been surpassed by newer DNA sequencing techniques which are faster and cheaper. This, the article reports, may be a sign of trouble to come, notwithstanding that Myriad's main patents do not start expiring until 2014. However, Myriad has stated that the company has time to start adapting to the new technology before its patents expire and in the future will be relying more on trade secret protection than on patents. Myriad's CEO Peter D. Meldrum in January stated, in reply to a question about whether Myriad would begin enforcing their European patents, including for BCRA1 and BCRA2, against companies using the genes in tests, that "[i]f I had my druthers, I would not want to go into a new market in a heavy-handed fashion, trying to enforce patents." Instead, the company is reported to begin relying more on its "vastly superior information."

The patent system is premised on requiring public disclosure of inventions - you get to enjoy your monopoly, as long as the rest of us can see and build upon your scientific step for the betterment of society (as long as the use is non-infringing during the limited time you are enjoying your monopoly). Trade secrets, however, are all about keeping information out of the public domain for an indefinite time. Should information, such as the information Myriad has about which of the thousands of mutations in the two genes raise the risk of getting cancer, be kept out of the public domain? If companies with valuable medical information are relying on trade secrets rather than patents, this could have serious impact on the progress of science (Copyright Clause) and in this case, medical research. If this begins to be a trend, are we to blame failings in our patent systems and protections or the desire of companies to maintain a monopoly on proprietary information and technology for as long as possible? Or is this just the same question? Are there public policy arguments for demanding that such information be disclosed, and if so, how does that square with the Anglo-American philosophy of commoditizing property (and IP)for financial gain? Is it only right that a company should use whatever legal means it has to protect its investment and research, regardless of any public policy or ethical considerations? Similiar questions are posed by the New York Times article and by Dan Vorhaus in his blog the Genomics Law Report.

$353 million - the amount of money reported to have been generated by the breast cancer test which accounted for Myriad's $402 million revenue in the year ending June 2011.

3 - The number of grape growers that have successfully claimed that the US government can be joined to a patent invalidity claim. The three Californian grape growers have claimed that a California trade group, The California Table Grape Commission, licensed invalid patents from the US Department of Agriculture(USDA). The USDA owned three patents issued under the Plant Variety Protection Act for grapevines that produce table grapes - Sweet Scarlet, Scarlet Royal and Autumn King. The USDA licensed its rights in the three patents to the California Table Grape Commission, a California state agency. The Commission was established to promote the state's table-grape industry and is funded by a tax levied on each box of table grapes produced in California. The Commission sublicences the patents and under the licences is entitled to retain 60% of the royalties with the remaining 40% going to the USDA. The Commission authorized three nurseries to serve as the exclusive distributors of the patented varieties. The ultimate growers of the grapes have to sign a "Domestic Grower License Agreement" which requires the growers to pay a royalty, prohibits the growers from propagating the plants, and permits the Commission to order the destruction of the purchased plants if the Commission believes the growers are violating the license.

Three grape growers, who purchased the grapevines covered by the patents signed the licence agreement and paid the licensing fee. They then brought a claim for declaratory judgment challenging the patents for invalidity for lack of novelty and that the Sweet Scarlet (picture, left) patent is unenforceable because of alleged inequitable conduct during prosecution at the USPTO. The US Court of Appeals for the Federal Circuit issued a decision last Wednesday that the Administrative Procedures Act ("APA")enables the 3 grape growers to "pursue equitable relief against the USDA on its patent law claims." The 3-judge panel ruled that the USDA could be joined as a party to the claim because the licensing agreement between the USDA and the Commission did no transfer all the rights in the patents, as such the USDA was a necessary and proper party to the grape grower's patents claims. Judge William Bryson, giving the opinion of the Court, held that an amendment to section 702 of the APA "recognizes a right of judicial review for 'agency action'" in that it waives "sovereign immunity for actions seeking relief other than money damages against federal agencies, officers, or employees" - such as the equitable relief sought by the grape growers in their dedicatory judgment for patent invalidity. As such, the grape growers could join the USDA in their action. Allegedly invalid patents are also curse for the US government it seems....

#24 - The ranking given to Girl Talk's album, Feed the Animals, by Rolling Stone in 2008. Girl Talk, the one man band of Gregg Gillis, a former biomedical engineer turned musician, is known for weaving hundreds of samples of recorded music and sounds into frenetic tracks which he releases for free or a la Radiohead model. A recent article in the Huffington Post this week explains why Gillis uses this model when he releases his work under the Illegal Art label. Also this week, EMI won a partial victory in a copyright lawsuit against online music storage site MP3tunes who was found liable for contributory infringement when it failed to remove unauthorized songs from its website after being put on notice. District Judge William Pauley however refused to rule on whether MP3tunes employees were liable for copyright infringement in downloading 171 songs.

1970s- The decade when late sportscaster Myron Cope coined the term "The Terrible Towel" (watch the story here). The Terrible Towel, a yellow and black cloth which is swung about in the air by the Pittsburgh Steeler's (an American football team) fans is the subject of a trade mark infringement suit. The lawsuit brought by the Steelers and Allegheny Valley School (who owns the trade mark and is where Cope's autistic son lived) against Eugene Berry Enterprise alleges that that company filed a trade mark application in May for THE TERRIBLE TOWEL and has been selling shirts with the mark. Eugene Berry Enterprise has been asked to withdraw its application.

There a couple of surveys out there in which readers might like to participate on their return from holidays. The IPKat's own survey (which you can find at the top of the side bar on the left hand side of his home page) is on what is the best way to deal with those dreadful folk who lose Community trade mark oppositions and then don't pay the admittedly small costs orders that are made against them. The second, on the Class 99 weblog, asks readers what they feel about the prospect of being able to file design registrations online rather than the old-fashioned way (you can find that survey at the top of the side bar on the right hand side of the Class 99 home page).

If you've a bit of spare time and want a review of the current British phone-hacking scandal which is both informative and stimulating, it's worth taking a look at "The Big Story: The Police and the Press Hand-in-Hand", an Iran-based PressTV production. This YouTube clip was drawn to the Kat's attention by Christopher Sherliker (Silverman Sherliker LLP), who is among the contributors to the programme. It raises s number of questions not merely concerning the symbiosis of the press and the law enforcement agency but also regarding the distribution of responsibility and blame in the fall-out that followed the News of the World fiasco.

Leigh Martin (Clarion Solicitors) has written to inform the IPKat of his latest venture, into the world of bicycling for a good cause. He's currently in training for a coast-to-coast bike ride which will cover 170 miles in 3 days. He is proposing to pedal the Way of the Roses route, which runs from Morecambe to Bridlington, setting off on 14 September. Among the team of cyclists is IP and commercial litigator Simon Young, whose daughter Bel has been paralysed from the neck down after falling from a climbing frame and now depends on a ventilator. The cyclists are seeking to raise funds for the Being Bel Trust, has been set up to raise funds to pay for adaptations of the family home, the specialist equipment and care that Bel will need for the foreseeable future to help make her life as normal and rewarding as everyone can hope it to be -- and also to maintain Bel’s body in the best possible condition in the event that future advances in spinal injury surgery may be able to treat Bel and people like her. Leigh adds:

"I would be immensely grateful for any pledge you feel you can make towards this cause. If you would like to make a donation to The Being Bel Trust, please could you contact Merle Riley on +44 (0) 113 222 3225 or email Merle at merle.riley@clarionsolicitors.com to let us know how much you would kindly like to sponsor us for".

The IPKat is very touched by this appeal and looks forward to responding to it in paw-son.

Comoros: great flag, shame
about the internet ...

Around the blogs. The jiplp weblog carries a pre-publication chance to read the Current Intelligence notes of Joel Smith and Joanna Silver (Herbert Smith LLP) on L'Oréal SA v eBay Internationaland of fellow Kat Matt Fisher (UCL) on Albert Packaging v Nampak. The European Copyright Code is getting some enthusiastic promotion from its supporters, as the 1709 Blog reports here. Afro-IP's A to Z tour of official IP websites in Africa travels to the Comoros archepelago, where there are none. Meanwhile, the MARQUES Class 46 blog has a call to its European trade mark readers to make the INTA's Trademark Reporter a bit more European, not to mention some miserable news for anyone who thinks it's easy for a company with a trade mark portfolio like Coca-Cola's to oppose an application to register a mark in Switzerland on the assumption that one's marks come with some sort of fame or reputation.

Orphan books in search of a reviewer. The Journal of Intellectual Property Law & Practice (JIPLP) has instituted a new, proactive policy for reviewing books sent to it. A week and a half ago it put out this plea for reviewers for some books. So far, not one single person has offered to review the US Patent Proecutor's Desk Reference or 'Expert Privilege' in Civil Evidence. If you think you may be qualified to tackle reviewing either of those titles and wish to do so, please email Sarah Harris, if possible by 8 September, to express your interest.

Small and Medium Sized Enterprises on the long march ... Working Groups of the UK's SME Innovation Alliance, which seeks to represent the views of SMEs working in innovation to Government, have been in dialogue with Government all through the summer as to how the UK's high technology SME sector can help rebuild the national economy. On 19 September SMEIA is holding a meeting at the London offices of Wragge & Co at which, among other things, speakers will report on the summer's activity and look forward to prospects to the future. The draft programme is here and members of the IP media are particular welcome to attend, so they can help spread the good word. To attend, contact Meeting Organisers Tim Crocker or Martin Lawrence.

Perusing his daily copy of the Bangkok Post, this well-read Kat could not fail to spot an article that, he instantly recognised, was bound to fascinate and enchant his readers. Entitled , "The race to bag cultural icon" by Piyaporn Wongruang, the article reads (in relevant part) as follows:

"The ownership of a graceful hand gesture that is part of traditional dance and shadow plays is causing new tensions between Thailand and Cambodia. Both countries lay claim to ownership of the jeeb -- a hand position where the thumb touches the index finger and the three other fingers are splayed out.

In 2008, Cambodia persuaded Unesco to include Khmer shadow theatre on a list of intangible cultural heritage items. The hand gesture is part of the dance. Thailand, however, has yet to ratify the convention allowing it to submit cultural heritage items to Unesco for contention as official intangible cultural items. A Unesco listing results in international recognition from the item, and funding to help preserve it.

A Thai jeeb

Culture Minister Sukumol Khunploem downplayed reports that Cambodia had ''stolen'' a Thai cultural icon. She said a Unesco listing has nothing to do with intellectual property or copyright issues [In technical legal terms it may not, but isn't WIPO involved in the protection of traditional cultural expressions, asks the IPKat, whose long memory stretches back to the 1982 draft model Law on the Protection of Expressions of Folklore against Illicit Exploitation and other Prejudicial Actions, this being a joint venture between WIPO and -- you guessed it -- Unesco]. ''It is normal for countries in the same region to share similar cultural traits,'' she said. Nonetheless, some academics are worried Thailand could be left behind in the race to register cultural items, as tourist earnings and funds for preservation are at stake. They say that if anything can help save intangible cultural heritage items, it is an inscription by Unesco.

Thailand is drawing up its own list of intangible treasures, which it can submit to Unesco once it has ratified the treaty governing such inscriptions. A list started by the Cultural Promotion Department in 2009 now has 50 intangible heritage items, including the Thai Shadow Puppet Theatre. Another 30 items, including famed spicy Thai soup of tom yum kung, Thai-style kites and banana stalk carvings are likely to join them.

... Intangible heritage items are based on tradition or, as Unesco puts it, are living expressions inherited from ancestors and passed on to successors. These include oral traditions, performing arts, social practices, rituals, festive events, knowledge and skills to produce traditional crafts, and even knowledge and practices concerning nature and the universe, its website notes. Unesco says intangible heritage helps maintain cultural diversity in the face of growing globalisation.

... Since 2003, when the Convention for Safeguarding of Intangible Cultural Heritage came into effect, Unesco has listed 16 intangible heritage items in need of urgent safeguarding, and 213 items of intangible cultural heritage of humanity.

... Cambodia's Royal Ballet and Khmer shadow theatre, or sbek thom, are among intangible cultural heritage of humanity items recognised by Unesco. Some scholars are worried Unesco's listing of the Cambodian items could deprive Thailand of the right to list similar treasures including Thai shadow play, or nang yai.

...Thailand cannot nominate items for a Unesco listing because it has yet to ratify the convention.
The Culture Ministry is preparing papers for the cabinet and parliament to allow the country to join the convention. The ministry has also drafted legislation to help safeguard the country's intangible heritage. Under the bill, a national committee for safeguarding intangible heritage treasures will be created, and a fund set up to support the work.

A sincerely committed IP enthusiast and practitioner has emailed the following missive to the Kats:

"I was wondering if any other IPKat readers ever wondered why we can't file an application to register a design online with the UK Intellectual Property Office (IPO)? It seems strange, particularly since it has provided a service to file trade marks online. I understand that the IPO has separate departments, and there may perhaps be issues with uploading large files to its website. However, recently a posted application was lost in the mail, which was of particular concern because the applicant requested deferred publication. When we realised what happened, we were able to file a copy of the application by forwarding a PDF of it via email. But why couldn't we just file the application online, or simply file the application via email in the first place? It seems very old-fashioned that we have to apply to register a design via post, particularly one where there is no difficulty representing the design on paper".

Sunday, 28 August 2011

A bit of an unsteady trigger figger led this Kat to post the blog--"Bad patents--or bad journalism"-- without its concluding points. Readers, especially those who found this post to be of interest, are invited to read on.

1. This Kat simply does not understand what The Economist intends when it urges "greater disclosure requirements of the ownership of patent portfolios", or to what problem(s) this proposed solution is directed. Readers' insights are welcome.

2. As for instituting specialist patent trial courts, the idea is more seductive than convincing. Besides the increased public costs involved in setting up such a system (an unlikely prospect in a Tea Party-driven environment), issues such as the Constitutional status of such courts, their composition, their fields of expertise, and how each such judge, based on his/her expertise, would be assigned to cases, are all wholly unclear.

3. And while we are talking about establishing specialist patent courts, how about setting up a parallel specialist court system to hear disputes involving finanical instruments, lest a non-expert jury be charged with rendering judgment on credit default swaps, mortgage-backed securities and the like. After all, the loss to the U.S. economy due to financial shenanigans is a magnitude of two or three-digit multiples greater than losses due to a less than perfect patent system.

At the end of day, my dissatisfaction with the article is about the failure to match the complexity of the subject-matter with the limitations of the journalistic platform adopted to discuss the topic. Better to focus on one patent issue at a journalistic time than to shoot scatter-gunned in various directions. The magazine's readers deserve no less.

Friday, 26 August 2011

This Kat regrets his recent absence, but he is into the final lap of a book publishing project that has been more or less all-consuming during the last several weeks. Moving from one such publishing environment to another is a daunting challenge. "Enough of your excuses", says Mrs Kat. "Just get on with it." She is right.

Against that backdrop, my attention was drawn to a leader article that appeared in the 20 August issue of The Economist. Entitled "Patent Medicine" here, the piece is one of a continuing number of articles that appeared in the magazine critical of the state of the patent system. Just so readers know where I stand: while I am one of these who devour every word of every issue of the magazine, my feeling about their coverage of IP issues can only be described as one of tough love. I frequently find their treatment of IP issues unsatisfying, usually because they seek to overstretch their reach on the IP topic of interest and the discussion tends to jump around from point to point. Unfortunately, their most current attack on the patent system is another example.

The article goes like this:

1. Google has announced its bid for the Motorola Mobility mobile phone business and its 17,000 patents plus 7,500 plus pending patent applications. Google currently has round 2,000 patents. Google was clearly desperate to win Motorola's porfolio", having lost out in the recent auction for the Nortel patent portfolio.

2. Patents are good in principle, because they encourage innovation and discloure in exchange for a monopoly of limted duration. "In recent years, however, the patent system has been stifling rather than encouraging [innovation]."

3. Proof for this can be found in the fact that, according to an unnamed 2008 study, the total profits from patents of American public companies (excluding pharmaceutical companies) in 1999(!) were about $4 billion dollars, while costs associated with patent litigation were about $14 billion dollars. "Such costs are behind the Motorola bid"; it wants the patent portfolio to strengthen its legal hand in the various lawsuits in which it finds itself in connection with smart phones.

What then follows is quintessential Economist-speak; first the problems with the American patent system and then the solutions (all in three paragraphs).

The Problems

1. Prizing the number of patents rather than their quality.
2. The granting of dubious patents, especially in the areas of software and business methods.
3. The increasing menace of patent trolls.

The Solution

1. Variable periods of patent protection based on the industry involved, depending upon whether innovation is fast and relatively cheap (e.g. computing) or slower and more costly (e.g., pharmaceuticals). "[S]uch distinctions are made in other areas of intellectual property law", it is noted without further elaboration (and this Kat fails to come up with any examples except for some shortened periods of protection for certain kinds of copyright-protected works).

2. Raise the bar for registration of software and and business method patents,what the article calls "dubious patents" and make "re-evaluating bad patents ... more open and efficient."

3. Increase the requirements for disclosure of the ownership of patent porfolios and establish specialized courts to hear patent disputes (East Texas Federal District Court, are you listening?).

What do make of this? Passing on the reference to the unnamed 2008 report based on results for 1999, and without knowing what is meant by "profits from patents" or "associated litigation costs", this Kat would note the following:

1. Regarding the three cited problems, it is possible to recategorize them as the problems of: (i) the standard for registration; (ii) patentable subject-matter; and (iii) enforcement. If so, neither software and business method patents, nor patent trolls, strike me as being the central reasons why the patent system is allegedly now "stifling innovation rather than encouraging it."

2. Point no. (i) seems more relevant, although there have significant efforts over the last several years to raise the bar on patentability.

3. In summary, it does not seem that the article has made out the case for these three problems to be the key roadblocks to a patent system in support of innovation and development. Indeed, even if you are one who believes that aggregate innovation has declined over the last decade (this claim has been made by various luminaries), it may be the case that this decline is due to factors other than the patent system. If so, the patent system may be the result of this decline rather than a major driver.

4. Whatever you think about these three problems and the relevant weight each should be given in accounting for the alleged current mess in the American patent system and the decline in innovation, it seems questionable that the three solutions offered provide the necesssary fix.

5. Thus, it is not clear how setting different time periods for registation for different industries necessarily solves the problem of "low-quality patents". At most, it merely might provide that at least some of these "low quality patents" might not bet around for the current 20-year period.

6. Depending upon how one feels about software patents and business method patents, "raising the bar" might provide some improvement to the system, but only at the margin. Similarly, improving the "re-evaluation" of "bad patents" is a poor and inefficient second alternative to avoiding such "bad patents" in the first place.

If you are young, gifted and good at writing intellectual property essays, it's almost but not quite too late to submit yours as an entry in the ATRIP Essay Competition 2011 for Young Researchers in Intellectual Property Law, the closing date for which is 31 August 2011 (that's next Wednesday). You can write on any IP topic, to a maximum length of 8,000 words inclusive of footnotes. Young, in this context, is "no older than 33 years of age as of 31 December 2011". Just email it to the IPKat's friend Professor Jan Rosén, making sure that no-one reading it will know who you are -- and tell the good professor that the IPKat sent you. Good news it that

"The authors of the best three papers will be mentioned as such on the ATRIP website in an ad hoc section. In addition, the author of the best paper will be invited to give a presentation as a speaker at the 2012 ATRIP international annual conference to be held in Chicago".

If you are young, glamorous and choosy as to what you wear, you may not yet have one of these in your wardrobe, but the IPKat's friend and fellow blogger Lorraine Fleck has drawn the Kat's attention, via LinkedIn's Fashion+IP group, to this piece in the LA Times which suggests that the Hells' Angels are not best pleased with Hollywood fashion house Wildfox, or online sales facility Amazon, for making and selling these cute little T-shirts.

Of course, the first question any red-blooded European trade mark enthusiast will ask is whether the slogan constitutes trade mark use, or whether it is taken merely as a statement that one should take liberties with the T-shirt's wearer without weighing up the prospects of an unwelcome visit from a bevy of bikers. The other interesting question, Merpel thinks, is what the generic or descriptive term for a Hell's Angel actually is. Readers' uggestions are invited.

International Treats ...

If you're young, scholarly and like to dig around in important areas of intellectual property that hardly anyone else seems to have spotted yet, you may be a kindred spirit to Simon Klopschinski (Hoffmann Eitle, Munich), whose German-language PhD thesis "Der Schutz geistigen Eigentums durch völkerrechtliche Investitionsverträge" (The Protection of Intellectual Property under International Investment Treaties) has just been published by Kluwer's Carl Heymanns Verlag imprint. The book's home page is here; you can also read a short English-language explanation of what it's about on the IP Finance blog here. All the Kats are sure that the book must be a good deal more exciting than its cover, here. They do however recognise how difficult it is to illustrate the theme of "international treaties", which is why they've settled for the very similar, if slightly shorter, "international treats" (left) ...

If you are old, nostalgic and patent-oriented,this piece of prose by Brookes Batchellor's Nick Dougan, celebrating the 50 years in IP practice which his colleague Roy Prentice has so far notched up, will give pleasure. Apart from an unusual sortie into the world of IP enforcement via some "heavies" (already posted here on PatLit), there's a touching recollection of what life used to be life before the era of the internet:

"Early days – patent searching

As a technical assistant, as trainee patent agents were called in those days, at first most of my time was spent searching. The Patent Office library was at 25 Southampton Buildings and D. Young & Co.’s offices at Staple Inn were next door. The library opened at 10.00 am. When I came in each morning, I would sort out the searches that needed to be done and then go over to the library at opening time. Now remember this was in the days before computers. Everything had to be searched manually and quite often the searches would take all morning [It seems to take some good folk considerably longer nowadays even with computers, notes Merpel, who guesses that there just wasn't so much prior art in the old days]. I would go back to the office at lunchtime and then had to report the searches in the afternoon. I remained responsible for most searches until another new boy started a couple of years later, when I was put in charge of the “search department”, as well as assuming responsibility for filing and prosecuting all of the registered design applications for the firm. Nowadays, with computers, what used to take over an hour can be done on the Internet in a few minutes and often in a few seconds [Ah, but thing that used to take a few seconds now take much longer -- like checking one's emails ...]".

If you're any age, love scientific data and are searching for something in your life, your interest may have been piqued by yesterday's post about Boliven's special one-month free trial offer for IPKat readers. Your excited expectations may then have tumbled when you spotted that, for a reason that the Kat has so far failed to blame anyone else, a key piece of information was missing: the url where free triallists are supposed to log on. It has now been belatedly added but, in case you are not one of those readers who regularly revisits old blog posts, the Kat thought he'd better mention it here too:

"All you have to do is register for your free trial, using the special offer code -KATFREETRIAL - and then you can search for one whole month to your heart's content. The place to register is www.boliven.com/freetrials".

If you are young, beefy and likely to end up as a burger on someone's plate, you may belong to a Texas herd that is going to be branded -- in the original meaning of the word. According to this fascinating news item, Texan cattle brands and marks -- like trade marks in many countries -- lapse after ten years if they are not renewed. A subtle difference is that all registered marks lapse on exactly the same day -- 30 August. Happily, there is a six-month renewal period if you forget to renew, following which your brand will be up for grabs and someone else might be able to register it in your place. The IPKat thanks his Mancunium IP correspondent Sang Nkhwazi for discovering this item.

It is well established in patent law that one can patent an invention even without understanding why it works the way it works. If I happen to be the first to discover that compound X cures cancer, I can get a patent on X for the treatment of cancer (provided the discovery wasn't obvious to the person skilled in the art), even when I have no clue whatsoever why X cures cancer.

So well, so good. As they say in the media business, "dog bites man is no news, man bites dog is news". The German Bundesgerichtshof (BGH) recently had the opportunity to consider the above tenet of patent law in reverse, so to speak. What if it is known that compound X is effective in the treatment of illness Y, but unknown why it works: can you get a patent on X for the treatment of Y if you are the first to find out how X works?

Defendant Merz & Co is the owner of the (expired) EP 392 059 B1 with a priority date of 14 April 1989. In 2006, Merz received a supplementary protection certificate (SPC) for "memantine, and its pharmaceutically compatible salts, namely memantinehydrochloride" for Germany based on EP 392 059 (given the CJEU's judgment in case C‑195/09Synthon BV v Merz Pharma GmbH & Co. KGaA, this being a reference for a preliminary ruling from the Patents Court, England and Wales, the SPC is invalid anyway, but that is not the issue here). Two unnamed plaintiffs sought a declaration of nullity of Merz's SPC based on the nullity of the base patent. Both the Bundespatentgericht as well as the BGH sided with the plaintiffs (BGH, X ZR 68/08 of 9 June 2011).

Merz restricted its patent, in essence, to "use of 1-amino-3,5-dimethyl-adamantane and its pharmaceutically compatible salts for the manufacture of a medicament for treatment of damaged brain cells after cerebral ischemia after morbus Alzheimer". The plaintiffs argued that the use of adamantane for the treatment of the family of symptoms to which Alzheimer belongs had been known at the priority date of the base patent. Merz defended itself by arguing that while the use may have been known, the mechanism how adamantine worked was unknown before the priority date and disclosed in the base patent for the first time.

The base patent, in the words of the BGH, disclosed the scientific foundation for the use of memantine in the treatment of Alzheimer and allowed a "better justifiable choice of memantine" ("besser verantwortbare Indikation der Memantingabe", para. 43). This, however, does not amount to a technical teaching, it is only a discovery of a biological mechanism that is not patentable under art. 52(2)(a) EPC (para. 44). The base patent neither teaches a different dosage regime nor gives any other specific directions for using memantine in the treatment of Alzheimer that had not been known in the prior art. The "commendable" scientific explanation offered by Merz is a medical and pharmalogical advance but not patentable. The SPC is therefore invalid because the base patent is invalid.

When the IPKat posted his original piece on the problems of collecting unpaid costs in IP opposition proceedings (here), he hoped for some thoughtful responses and he was not disappointed. Readers' comments, particularly that of Robert Cumming (Walker Morris), made for interesting reading. We all now have a better idea of the problem and, thanks to this blog's little survey (which you will find perched at the top of the home page side bar), we can see what readers regard as the preferred solutions. With the first 100 votes cast, the preferred option appears to be to ask an opponent to give security for costs. A monthly escalation of unpaid costs -- which was initially the front runner -- has stalled in second place, scarcely ahead of the third most-favoured option, the technically and politically more problematic solution of rendering a debtor's own IP rights (assuming he has any) unenforceable until he pays his outstanding costs. Surprisingly, at least to this Kat, the "name-and-shame" option of listing non-payers' names until they cough up, has no support among IP practitioners and their clients at all.

Require security for costs

41(42%)

Make costs orders larger so that it's worth suing to recover them

5 (5%)

Monthly escalation of unpaid costs

23(23%)

Use name-and-shame websites

0 (0%)

Render their own IP unenforceable till they pay

22(22%)

Forgive them, for they know not what they do

9 (9%)

There's still nearly two weeks till the poll closes -- and your opinion can still influence the outcome!

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